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TRADEMARK FAQ'S

What is a trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. “Trademark” is commonly used to mean both trademarks and service marks.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Who is the applicant?

The application must be filed in the name of the owner of the mark. The owner of the mark is the person or entity who controls the nature and quality of the goods identified by the mark and/or the services rendered in connection with the mark. The owner may be an individual, corporation, partnership, or other type of legal entity. You do not need to be a U.S. citizen in order to apply. If you do not reside in the United States, you may appoint a "domestic representative" as part of the application process.

What is a "standard character" drawing?

You may submit a standard character drawing if:

  • All letters and words in the mark are depicted in Latin characters;
  • All numerals in the mark are depicted in Roman or Arabic numerals;
  • The mark includes only common punctuation or diacritical marks; and
  • The mark does not include a design element.

What is a "Stylized or Special Form" drawing?

If the particular style of lettering is important or the mark includes color or a design or logo, you must select the "stylized or special form" drawing format. The drawing page should show a black and white image of the mark unless color is claimed as a feature of the mark. The drawing in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.

Can I change the goods and/or services after filing my application?

You can clarify or limit the goods and/or services. However, you may not expand or broaden the identification of goods and/or services after filing the application.

What is "intent to use"?

If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application. An "intent to use" application must include a sworn statement that you have a bona fide intention to use the mark in commerce.

What is a "specimen" of use?

A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which merely represents what you are claiming as the mark.

What is a proper specimen for use of a mark on goods?

Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods.

What is a proper specimen for use of a mark with services?

A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself.

What is an Allegation of Use?

An Allegation of Use is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. It must be filed before the USPTO will register a mark that is based upon a bona fide intention to use the mark in commerce.

When do I file an Allegation of Use?

You may file the Allegation of Use only

  • on or before the day the examining attorney approves the mark for publication in the Official Gazette (an Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use); or
  • on or after the day the USPTO issues the Notice of Allowance (an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use).

The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued, the USPTO will return it.

Is there a deadline for filing the Statement of Use?

Yes. Once the USPTO issues the Notice of Allowance, you have six (6) months to file the Statement of Use. The six-month period runs from the date the USPTO issues the Notice of Allowance, not the date you receive it. If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use before the end of the six-month period, or the application will be declared "abandoned."

The above is intended as a general introduction and should not be construed as legal advice or legal opinion for your particular case. Please contact the Law Offices of Yu & Associates with any specific questions. Tel: (301) 838-8986, Email: syu@yulegal.com, Address: 110 N Washington Street, Suite 328E, Rockville, MD 20850.




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